As announced in this October 30, 2017 Federal Register notice, the USPTO is expanding the Collaborative Search Pilot Program under which applicants can request that multiple intellectual property offices exchange search results prior to issuing a first office action. As explained in the notice, the CSP is designed to provide examiners with a “more comprehensive set of prior art references to consider when making initial patentability determinations.” The Expanded CSP drops the requirement to participate in the First Action Interview Pilot Program and may be opened up to additional intellectual property offices.
It’s a scary time for intellectual property stakeholders in life science industries. Even if you can get your claims past the batty patent eligibility jurisprudence you still have to fight your way through the old cobwebs of obviousness and enablement. With the constant threat of inter partes review, post grant review, and even covered business method review, your patent rights never rest in peace.
In a non-precedential decision issued in Merck Sharp & Dohme B.V., v. Warner Chilcott Co. LLC, the Federal Circuit reversed the district court’s obviousness ruling as being improperly grounded in hindsight. This decision provides a welcome reminder that even simple-sounding inventions can be nonobvious, but why is it non-precedential?
The October 5, 2017 Federal Circuit decision in Amgen Inc. v. Sanofi is getting a lot of attention for its commercial impact, because the court vacated the permanent injunction that prevented Sanofi and Regeneron from marketing their cholesterol-lowering Praluent® (alirocumab) product, which will compete with Amgen’s Repatha® (evolocumab) product. But the decision also addresses several important legal issues, including questioning the USPTO’s practice of granting broad antibody claims.
In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board’s approach to obviousness rejections, including its reliance on the doctrine of routine optimization without evidence of an expectation of success, and its reliance on the doctrine of inherency when the record reveals unexpected results. Now, the Federal Circuit has criticized the Board’s approach to claim construction, finding in In re Smith International, Inc. that the Board applied an unreasonably broad construction that was not consistent with the applicant’s use of the term in the specification.